As a law firm that specializes in intellectual property in the Houston-area, we are asked quite frequently about patents. While we routinely liaison with companies that have been successful in business for years, we also hear from startups and new entrepreneurs - we are happy to speak with startups and entrepreneurs, and even offer a free consultation with one of our IP Specialists.
Individuals or companies that are new to or have not previously considered intellectual property often start with the most obvious question: Should I get a patent? The answer is not always straightforward, and no matter what the conversation can quickly become complicated. Still, there are at least a few aspects that are routine to any related discussion.
First, it is a common misconception that a patent gives you a right to ‘do something’ - not true. Instead, a patent gives you exclusive rights to exclude others from doing something, namely, make, use, offer to sell, or sell a patented invention. Your right to ‘do something’ is predicated on whether someone else has a patent, or if some other code or law prohibits it.
Next, your invention needs to fall under an umbrella of ‘patentable subject matter’. Really, this can be just about anything, and in fact Courts have indicated that Congress intended patentable subject matter to “include anything under the sun that is made by man.” Yet there are limits, and the closer your invention is to a statutory category of subject matter (i.e., a process, a machine, an article of manufacture, a composition of matter, or an improvement on any thereof) the better off you are.
Lastly, your invention, as it may ultimately be claimed in a pending patent application, will need to pass a threshold of patentability with respect to usefulness and against knowledge that is already in the public domain. I have yet to encounter an idea or concept that did not at least have some usefulness to it, even if just conceptually. So the challenge typically relates to the knowledge in the public domain, or “prior art”. The law as to what constitutes prior art changed with the enactment of the America Invents Act back in 2013, but essentially your invention has to be ‘new’, and it has to be ‘nonobvious’.
If you are able to satisfy these threshold requirements, then the next piece of the puzzle becomes a resource-based question. Resources, and the allocation of resources, are often the most difficult part of decision making faced by startups and entrepreneurs.
At Rao DeBoer Osterrieder, our goal is to help you understand aspects related to getting a patent so you can make the best decision possible. You can schedule an initial Q&A by accessing our consult page.
© 2017 John M. DeBoer
John DeBoer is an attorney admitted with the Texas State Bar. He is a Partner with Rao DeBoer Osterrieder, a law firm in Houston, Texas specializing in intellectual property law. Contact John via Email.
The views expressed in this article are those of the author and do not reflect the views of Rao DeBoer Osterrieder, PLLC, or any of its clients. All rights reserved.